Cisco Systems, Inc.v.Straight Path IP Group, Inc.

Patent Trial and Appeal Board

May 9, 2016

08719554 (P.T.A.B. May. 9, 2016)

Trials@uspto.gov Paper 11
Tel: 571-272-7822 Entered May 9, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

LG ELECTRONICS, INC., TOSHIBA CORP., VIZIO, INC.,
HULU, LLC, CISCO SYSTEMS, INC., AVAYA, INC.,
VERIZON SERVICES CORP., and
VERIZON BUSNESS NETWORK SERVICES INC.,
Petitioner,

v.

STRAIGHT PATH IP GROUP, INC.,
Patent Owner.
_____________

Case IPR2015-001961 (Patent 6,131,121 C1)
Case IPR2015-001982 (Patent 6,009,469 C1)
Case IPR2015-002093 (Patent 6,108,704 C1)
_____________

Before KALYAN K. DESHPANDE, TRENTON A. WARD, and
BART A. GERSTENBLITH, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a); 37 C.F.R. § 42.73

1 IPR2015-01397 and IPR2015-01407 were joined with this proceeding.
2 IPR2015-01400 was joined with this proceeding.
3 IPR2015-01398 and IPR2015-01406 were joined with this proceeding.
IPR2015-00196 (Patent 6,131,121 C1)
IPR2015-00198 (Patent 6,009,469 C1)
IPR2015-00209 (Patent 6,108,704 C1)

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I. INTRODUCTION
A. Background
LG Electronics, Inc. (“LG”), Toshiba Corp.(“Toshiba”), VIZIO, Inc.
(“VIZIO”), and Hulu, LLC (“Hulu”) filed three Petitions requesting inter
partes review of claims 1, 11, 12, 14, 16, 19, 22, 23, 27, 30, and 31 of U.S.
Patent No. 6,108,704 C1 (209 Ex. 1001,4 “the ’704 patent”), claims 1–3, 5,
6, 9, 10, 14, 17, and 18 of U.S. Patent No. 6,009,469 C1 (198 Ex. 1001, “the
’469 patent”), and claims 3, 4, and 6‒14 of U.S. Patent No. 6,131,121 C1
(196 Ex. 1001, “the ’121 patent”). 209 Paper 1 (“209 Pet.”); 198 Paper 1
(“198 Pet.”); 196 Paper 1 (“196 Pet.”). Straight Path IP Group, Inc. (“Patent
Owner”) filed a Preliminary Response. 209 Paper 15 (“209 Prelim. Resp.”);
198 Paper 19 (“198 Prelim. Resp.”); 196 Paper 15 (“196 Prelim. Resp.”).
On May 15, 2015, pursuant to 35 U.S.C. § 314, we instituted inter partes
review in each case as follows:

4 Citations are preceded by “209” to designate IPR2015-00209, “198” to
designate IPR2015-00198, or “196” to designate IPR2015-00196. Unless
noted otherwise, all citations are to IPR2015-00209.
IPR2015-00196 (Patent 6,131,121 C1)
IPR2015-00198 (Patent 6,009,469 C1)
IPR2015-00209 (Patent 6,108,704 C1)

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Case Claims Instituted Basis References
IPR2015-00209 1 § 103(a) WINS
5 and
NetBIOS6
IPR2015-00209
11, 12, 14, 16, 19,
22, 23, 27, 30, and
31
§ 103(a) WINS, NetBIOS, and Pinard7
IPR2015-00198 1–3, 9, 10, 14, 17, and 18 § 103(a)
WINS, NetBIOS,
and Pinard
IPR2015-00198 5 and 6 § 103(a) WINS and NetBIOS
IPR2015-00196 3, 4, 6‒14 § 103(a) WINS and NetBIOS
209 Paper 20 (“209 Dec.”); 198 Paper 24 (“198 Dec.”); 196 Paper 20
(“196 Dec.”).
After institution of inter partes review, Cisco Systems, Inc. (“Cisco”)
and AVAYA, Inc. (“AVAYA”) filed three Petitions and Motions to Join the
IPR2015-00209, IPR2015-00198, and IPR2014-00196 proceedings.
IPR2015-01398, Papers 3, 4; IPR2015-01400, Papers 3, 5; IPR2015-01397,
Papers 2, 3. Verizon Services Corp. and Verizon Business Network
Services Inc. (collectively, “Verizon”) also filed two Petitions and Motions
to Join the IPR2015-00209 and IPR2015-00196 proceedings. IPR2015-
01406, Papers 1, 3; IPR2015-01407, Papers 1, 3. We granted these motions
and joined Cisco, AVAYA, and Verizon to these inter partes reviews.

5 Microsoft Windows NT 3.5, TCP/IP User Guide (1994) (Ex. 1003,
“WINS”).
6 The Open Group, Technical Standard, Protocols For X/Open Pc
Interworking: SMB, Version 2.0 (1992) (Ex. 1004, “NetBIOS”).
7 U.S. Patent No. 5,533,110, issued July 2, 1996 (Ex. 1020, “Pinard”).
IPR2015-00196 (Patent 6,131,121 C1)
IPR2015-00198 (Patent 6,009,469 C1)
IPR2015-00209 (Patent 6,108,704 C1)

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209 Papers 36, 39; 198 Paper 40; 196 Papers 38, 41. We refer to LG,
Toshiba, VIZIO, Hulu, Cisco, AVAYA, and Verizon collectively as
“Petitioner.”
Patent Owner filed a Response in each case (209 Paper 30, “209 PO
Resp.”; 198 Paper 34, “198 PO Resp.”; 196 Paper 32, “196 PO Resp.”), and
Petitioner filed a Reply (209 Paper 37, “209 Pet. Reply”; 198 Paper 41,
“198 Pet. Reply”; 196 Paper 39, “196 Pet. Reply”). Subsequent to Patent
Owner’s Response and Petitioner’s Reply, the United States Court of
Appeals for the Federal Circuit issued its decision in Straight Path IP Grp.,
Inc. v. Sipnet EU S.R.O., 806 F.3d 1356 (Fed. Cir. 2015) (“Straight Path”).
See Ex. 2042. Petitioner filed additional briefing in light of Straight Path
(209 Paper 47, “209 Addʼl Br.”; 198 Paper 50, “198 Addʼl Br.”;
196 Paper 49, “196 Addʼl Br.”) and Patent Owner filed a response to
Petitioner’s additional briefing (209 Paper 50, “209 PO Add’l Resp.”;
198 Paper 53, “198 PO Add’l Resp.”; 196 Paper 52, “196 PO Add’l Resp.”).
Oral hearing was held on February 9, 2016, and the hearing transcript was
entered in the record. 209 Paper 53; 198 Paper 56; 196 Paper 55 (“Tr.”).8
Petitioner also filed a Motion to Exclude Evidence (209 Paper 45, “209
Mot.”; 198 Paper 48, “198 Mot.”; 196 Paper 47, “196 Mot.”), Patent Owner
filed an Opposition to Petitioner’s Motion to Exclude Evidence (209 Paper
49, “209 Opp. Mot.”; 198 Paper 52, “198 Opp. Mot.”; 196 Paper 51,
“196 Opp. Mot.”), and Petitioner filed a Reply to Patent Owner’s Opposition

8 The hearing transcript is the same for all three cases.
IPR2015-00196 (Patent 6,131,121 C1)
IPR2015-00198 (Patent 6,009,469 C1)
IPR2015-00209 (Patent 6,108,704 C1)

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to Petitioner’s Motion to Exclude Evidence (209 Paper 52, “209 Reply
Mot.”; 198 Paper 55, “198 Reply Mot.”; 196 Paper 54, “196 Reply Mot.”).
The following table summarizes the papers filed by the parties:
Case No. IPR2015-00209 IPR2015-00198 IPR2015-00196
Petition Paper 1 (“209 Pet.”)
Paper 1
(“198 Pet.”)
Paper 1
(“196 Pet.”)
Preliminary
Response
Paper 15 (“209
PO Resp.”)
Paper 19 (“198
PO Resp.”)
Paper 15 (“196
PO Resp.”)
Decision to
Institute
Paper 20
(“209 Dec.”)
Paper 24
(“198 Pet.”)
Paper 20
(“196 Pet.”)
PO Response Paper 30 (“209 PO Resp.”)
Paper 34 (“198
PO Resp.”)
Paper 32 (“196
PO Resp.”)
Petitioner’s
Reply
Paper 37 (“209
Pet. Reply”)
Paper 41 (“198
Pet. Reply”)
Paper 39 (“196
Pet. Reply”)
Petitioner’s
Additional
Briefing
Paper 47 (“66
Add’l Br.”)
Paper 50 (“198
Add’l Br.”)
Paper 49 (“196
Add’l Br.”)
Patent
Owner’s
Response to
Additional
Briefing
Paper 50 (“209
PO Add’l Resp.”)
Paper 53 (“198
PO Add’l Resp.”)
Paper 52 (“196
PO Add’l Resp.”)
Petitioner’s
Motion to
Exclude
Paper 45
(“209 Mot.”)
Paper 48
(“198 Mot.”)
Paper 47
(“196 Mot.”)
Opposition to
Motion to
Exclude
Paper 49 (“209
Opp. Mot.”)
Paper 52 (“198
Opp. Mot.”)
Paper 51 (“196
Opp. Mot.”)
Reply to
Opposition to
Motion to
Exclude
Paper 52 (“209
Reply Mot.”)
Paper 55 (“198
Reply Mot.”)
Paper 54 (“196
Reply Mot.”)
The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
IPR2015-00196 (Patent 6,131,121 C1)
IPR2015-00198 (Patent 6,009,469 C1)
IPR2015-00209 (Patent 6,108,704 C1)

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For the reasons discussed below, we are not persuaded that Petitioner has
shown by a preponderance of the evidence that claims 1, 11, 12, 14, 16, 19,
22, 23, 27, 30, and 31 of the ʼ704 patent, claims 3, 6, 9, 10, 14, 17, and 18 of
the ʼ469 patent, and claims 4 and 6‒14 of the ʼ121 patent are unpatentable.
For the reasons discussed below, we are persuaded that Petitioner has shown
by a preponderance of the evidence that claims 1, 2, and 5 of the ʼ469 patent
and claim 3 of the ’121 patent are unpatentable.
B. Related Proceedings
Petitioner indicates that the ’704, ʼ469, and ʼ121 patents are the
subject of the proceedings in Straight Path IP Grp., Inc. v. Vizio et. al,
No. 1:13-cv-00934 (E.D. VA.). Pet. 4. Petitioner further indicates that the
ʼ704 patent was the subject of a final written decision in Sipnet EU S.R.O. v.
Straight Path IP Grp., Inc., IPR2013-00246 (PTAB), which was
subsequently reversed and remanded in Straight Path. Pet. 2. The
remanded case in IPR2013-00246 is still pending before the Board as of the
entry of this Decision.
C. The ʼ704, ʼ469, and ʼ121 Patents
The ’704 patent is titled “Point-to-Point Internet Protocol” and
generally relates to establishing a point-to-point communication link.
209 Ex. 1001, 2:53–57. The ’469 patent is titled “Graphic User Interface for
Internet Telephony Application” and generally relates to facilitating audio
communications over computer networks. 198 Ex. 1001, 1:54–57. The
’121 patent is titled “Point-to-Point Computer Network Communication
Utility Utilizing Dynamically Assigned Network Protocol Addresses” and,
similar to the ’409 patent, relates to facilitating audio communications over
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IPR2015-00198 (Patent 6,009,469 C1)
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computer networks. 196 Ex. 1001, 1:55–57. The ’469 and ’121 patents are
continuations-in-part of the ’704 patent. 198 Ex. 1001 at [63]; 196 Ex. 1001
at [63]. The specifications for the three challenged patents are very similar
and, in some instances, duplicative.
Each patent explains that a first processing unit automatically
transmits its associated e-mail address, and its IP address, to a connection
server. 209 Ex. 1001, 5:25–38; 198 Ex. 1001, 6:66–7:9; 196 Ex. 1001,
6:60–7:3. The connection server stores the addresses in a database and, thus,
the first processing unit is established as an active on-line party available for
communication. Id. The first processing unit sends a query to the
connection server, which searches the database to determine whether a
second processing unit is active and on-line. 209 Ex. 1001, 5:55–60;
198 Ex. 1001, 7:31–36; 196 Ex. 1001, 7:24–29. If the callee is active and
on-line, the connection server sends the IP address of the callee from the
database to the first processing unit, i.e., performs a point-to-point Internet
protocol communication. 209 Ex. 1001, 5:60–64; 198 Ex. 1001, 7:37–40;
196 Ex. 1001, 7:30–34. The first processing unit then directly establishes
the point-to-point Internet communication with the callee using the retrieved
IP address. 209 Ex. 1001, 5:64–67; 198 Ex. 1001, 7:40–43; 196 Ex. 1001,
7:33–36.
IPR2015-00196 (Patent 6,131,121 C1)
IPR2015-00198 (Patent 6,009,469 C1)
IPR2015-00209 (Patent 6,108,704 C1)

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Figure 1 of the ’704, ʼ469, and ʼ121 patents is reproduced below:

Figure 1 above illustrates the architecture between first processing unit 12,
second processing unit 22, and connection server 26. 209 Ex. 1001, 5:15–
29, 198 Ex. 1001, 6:56–7:3; 196 Ex. 1001, 6:50–64.
D. Illustrative Claims
Petitioner challenges claims 1, 11, 12, 14, 16, 19, 22, 23, 27, 30, and
31 of the ’704 patent, claims 1–3, 5, 6, 9, 10, 14, 17, and 18 of the
’469 patent, and claims 3, 4, and 6‒14 of the ’121 patent. 209 Pet. 36–60;
198 Pet. 37–60; 196 Pet. 29–59. Claim 1 of the ’704 patent is illustrative of
the claims at issue in that patent and is reproduced below.
1. A computer program product for use with a computer
system, the computer system executing a first process and
operatively connectable to a second process and a server over a
computer network, the computer program product comprising:
a computer usable medium having program code
embodied in the medium, the program code comprising:
program code for transmitting to the server a
network protocol address received by the first process
following connection to the computer network;
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program code for transmitting, to the server, a
query as to whether the second process is connected to
the computer network;
program code for receiving a network protocol
address of the second process from the server, when the
second process is connected to the computer network;
and
program code, responsive to the network protocol
address of the second process, for establishing a point-to-
point communication link between the first process and
the second process over the computer network.
Claim 1 of the ’469 patent is illustrative of the claims at issue in
that patent and is reproduced below.9
1. A computer program product for use with a computer
system having a display, the computer system capable of
executing a first process and connecting to other processes and
a server process over a computer network, the computer
program product comprising a computer usable medium having
computer readable code means embodied in the medium
comprising:
a. program code for generating a user-interface
enabling control of a first process executing on the computer
system;
b. program code for determining the currently
assigned network protocol address of the first process upon
connection to the computer network;
c. program code responsive to the currently assigned
network protocol address of the first process, for establishing a
communication connection with the server process and for
forwarding the assigned network protocol address of the first
process and a unique identifier of the first process to the server

9 Italicized terms and limitations represent amendments to the claims as
issued in the Ex Parte Reexamination Certificate. See 198 Ex. 1001.
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process upon establishing a communication connection with the
server process; and
d. program code, responsive to user input commands,
for establishing a point-to-point communications with another
process over the computer network.
Claim 6 of the ’121 patent is illustrative of the claims at issue in
that patent and is reproduced below.10
6. A computer program product for use with a computer
system capable of executing a first process and connecting to
other processes and a server process over a computer network,
the computer program product comprising a computer usable
medium having computer readable code means embodied in the
medium comprising:
A. program code configured to, following connection
of the first process to the computer network, forward to the
server process a dynamically assigned network protocol address
at which the first process is connected to the computer network;
B. program code configured to query the address
server as to whether the second process is connected to the
computer network;
C. program code configured to receive a dynamically
assigned network protocol address of the second process from
the address server, when the second process is connected to the
computer network; and
D. program code configured to respond to the
network protocol address of the second process, establish a
point-to-point communication link with the second process over
the computer network.

10 Italicized terms and limitations represent amendments to the claims as
issued in the Ex Parte Reexamination Certificate. See 196 Ex. 1001.
IPR2015-00196 (Patent 6,131,121 C1)
IPR2015-00198 (Patent 6,009,469 C1)
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E. Claim Construction
We construe expired patent claims according to the standard applied
by the district courts. See In re Rambus, 694 F.3d 42, 46 (Fed. Cir. 2012).
Specifically, we apply the principles set forth in Phillips v. AWH Corp.,
415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). “In determining the
meaning of the disputed claim limitation, we look principally to the intrinsic
evidence of record, examining the claim language itself, the written
description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
(citing Phillips, 415 F.3d at 1312–17).
The words of a claim are generally given their ordinary and customary
meaning, and that is the meaning the term would have to a person of
ordinary skill at the time of the invention, in the context of the entire patent
including the specification. See Phillips, 415 F.3d at 1312–13. Claims are
not interpreted in a vacuum but are a part of and read in light of the
specification. See Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113,
1116 (Fed. Cir. 1987). Although it is improper to read a limitation from the
specification into the claims, In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993), the claims still must be read in view of the specification of
which they are a part. See Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d
1340, 1347 (Fed. Cir. 2004).
Only those terms that are in controversy need to be construed and only
to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am.
Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). We construe the
following claim terms.
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1. “is connected to the computer network” / “on-line status” /
“is accessible”
Independent claim 1 of the ʼ704 patent recites, “transmitting, to the
server, a query as to whether the second process is connected to the
computer network.” Dependent claims 3 and 6 of the ʼ469 patent,
independent claims 6, 7, 8, 12, 13, and 14 of the ʼ121 patent, and dependent
claim 4 of the ’121 patent recite the similar limitations of a query as to
whether a second process “is connected to the computer network” (emphasis
added). Independent claims 11 and 22, and dependent claims 12, 14, 16, 19,
23, 27, 30, and 31 of the ʼ704 patent recite “querying the server as to the on-
line status of the first callee process” (emphasis added). Independent
claim 9 and dependent claims 14, 17, and 18 of the ʼ469 patent recite similar
limitations as to a query whether the first callee process “is accessible,” and
independent claims 9, 10, and 11 of the ʼ121 patent recite a similar limitation
as to the processes “having [an] on-line status” (emphasis added).
In Straight Path, the Federal Circuit held that the claim language “is
connected to the computer network” has a facially clear meaning, that “the
query transmitted to the server seeks to determine whether the second unit is
connected at that time, i.e., connected at the time that the query is sent.”
Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query

11 Petitioner argues that the relevant specifications do not include an
embodiment that “guarantee[s]” that an entry in its database is online, and,
therefore, Patent Owner’s argument does not distinguish the ’704, ’469, and
’121 patents over the prior art. Addʼl Br. 6‒7. However, such an argument
goes towards whether there is written description and enablement support
for the claims. In Straight Path, the Federal Circuit did not offer a view as
to the sufficiency of the written description or enablement based on the
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asks “whether the device ‘is’ connected, not whether it was connected or
whether it is still registered as being connected even if that registration
information is no longer accurate.” Id. The Federal Circuit further
explained that “[i]t is not a reasonable interpretation of the claim language
. . . to say that it is satisfied by a query that asks only for registration
information, regardless of its current accuracy.” Id. The Federal Circuit
explained, “[w]hen claim language has as plain a meaning on an issue as the
language does here, leaving no genuine uncertainties on interpretive
questions relevant to the case, it is particularly difficult to conclude that the
specification reasonably supports a different meaning. The specification
plays a more limited role than in the common situation where claim terms
are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the
Federal Circuit construed the limitation “is connected to the computer
network” as “is connected to the computer network at the time that the query
is transmitted to the server.” Id. at 1363.
Petitioner and Patent Owner argue that the limitations “on-line status”
and “is accessible” have the same meaning as “is connected to the computer
network.” See 209 Pet. 35–36; 209 PO Resp. 36‒48; 198 Pet. 35–36;
198 PO Resp. 35‒46; 196 Pet. 29; 196 PO Resp. 38‒51. Similar to “is
connected to a computer network,” the “on-line status” and “is accessible”
of the second process are recited in the present tense, and therefore must be

claim construction provided by the Federal Circuit because “written-
description and enablement challenges were not, and could not have been,
part of the inter partes review.” Straight Path, 806 F.3d at 1363. We
similarly do not determine whether this claim limitation is supported by the
specifications of the ʼ704, ʼ469, and ʼ121 patents.
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determined at the time of the querying whether the second process “is
accessible” or selecting of the process having an “on-line status.” Therefore,
we construe “on-line status” and “is accessible” as having the same meaning
as “is connected to the computer network.”
Petitioner argues that the Federal Circuit relied on two disclosures in
the ʼ704 patent in construing “is connected to the computer network” and
“on-line status.” Addʼl Br. 2. Petitioner argues that the Federal Circuit
explained that the use of “timestamps” and the server’s maintenance of the
database upon the user’s logging off are descriptions of “is connected to a
computer network” and “on-line status.” Id. However, Petitioner did not
raise these positions in its Petition. Nonetheless, we disagree with
Petitioner. The Federal Circuit held that “[w]hen claim language has a plain
meaning . . . leaving no genuine uncertainties on interpretive questions . . .
[t]he specification plays a more limited role than in the common situation
where claim terms are uncertain in meaning in relevant respects.” Straight
Path, 806 F.3d at 1361. Although the Federal Circuit highlighted the same
disclosures from the ʼ704 patent specification argued by Petitioner, the
Federal Circuit did not rely on the ʼ704 patent specification in narrowing “is
connected to the computer network” and “on-line status,” but rather held that
the ʼ704 patent specification did not contradict its claim construction of
these terms. See id.
2. “process”
The claims recite a “query . . . as to whether the second process is
connected to the computer network” (emphasis added). Patent Owner
argues that the plain and ordinary meaning of the term “process” is “a
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running instance of a computer program or application.” PO Resp. 26‒31.
Petitioner accepts Patent Owner’s proposed construction. Pet. Reply 6;
Tr. 20:1–4. Petitioner and Patent Owner, however, disagree as to whether a
computer with an operating system is a computer program, and, therefore, a
“process.” PO Resp. 26–36; Pet. Reply 7–10.
In Ancora Technologies, the Federal Circuit explained that “[t]he
ordinary meaning of the word ‘program’ in the computer context
encompasses both operating systems and the applications that run on them
(as well as other types of computer programs)” and “‘to a computer
programmer’ a program is merely a ‘set of instructions’ for a computer.”
Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 734 (Fed. Cir. 2014).
Applying this guidance to the case before us, we agree with Petitioner and
construe the term “process” to mean “a running instance of a computer
program or application,” where a “computer program” is a set of instructions
for a computer that encompasses both operating systems and the applications
that run on them.
We further note that the ʼ704, ʼ469, and ʼ121 patent specifications
interchange the terms “process” and “processing unit.” For example, the
specifications explain that a first “processing unit” is “established in the
database [] as an active on-line party.” Ex. 1001, 5:29–34. The claims
recite the term “process.” Accordingly, our construction is also consistent
with the specifications, such that a “process” includes a “processing unit”
that is running a program (operating system) or application.
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II. ANALYSIS
A. 35 U.S.C. § 315 Statutory Bar
Patent Owner argues that the Petitions are barred under both
35 U.S.C. § 315(a)(1) and 35 U.S.C. § 315(b). 209 PO Resp. 2‒6; 198
PO Resp. 2‒6; 196 PO Resp. 2‒6.
1. Section 315(a)(1)
Under 35 U.S.C. § 315(a)(1), “[a]n inter partes review may not be
instituted if, before the date on which the petition for such a review is filed,
the petitioner or real party in interested filed a civil action challenging the
validity of a claim of the patent.”
Patent Owner argues that Hulu filed a civil declaratory judgment
action challenging the validity of the ʼ704, ’469, and ’121 patents. 209
PO Resp. 2‒3; 198 PO Resp. 2‒3; 196 PO Resp. 2‒3. Specifically, Patent
Owner argues that Hulu sought to intervene in a civil action between Patent
Owner and LG, Toshiba, and VIZIO, and in doing so Hulu challenged the
validity of the ʼ704 patent, the ’469 patent, and the ’121 patent claims. Id.
Patent Owner argues by challenging both “invalidity and non-infringement”
in a civil action prior to filing its Petition for inter partes review, Hulu is
barred under 35 U.S.C. § 315(a)(1) from filing its Petition. Id. (citing
Ex. 2002, 6; Ex. 2001, 1, 9–10; Ex. 2003, 5). Patent Owner points to Hulu’s
statement that “Hulu does not infringe . . . a valid claim, if any, of the
ʼ704 Patent,” and asserts that Hulu has challenged explicitly the ʼ704 patent
claims because the district court cannot resolve Hulu’s allegation without
first determining the validity of the ʼ704 patent claims. Id. at 3 (quoting
Ex. 2003, 5) (emphasis omitted).
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Hulu argues that its Complaint in Intervention only alleges a cause of
action for non-infringement. Pet. Reply 3. Specifically, Hulu argues that
Patent Owner selectively quotes Hulu’s Motion to Intervene, but Hulu’s
Complaint does not include the terms “invalid” or “invalidity.” Id. at 3–4.
Hulu further argues that the Board has held that a “civil action for a
declaratory judgment of non-infringement is not a civil action challenging
the validity of a patent.” Id. at 3‒4 (quoting Ariosa Diagnostics v. Isis
Innovation Ltd., Case IPR2012-00022, slip op. at 14 (PTAB Sept. 2, 2014)
(Paper 166) (emphasis omitted)). In Ariosa, the Board determined that
Ariosa, a party that had previously filed a declaratory judgment action of
non-infringement of a patent, was permitted to filed a inter partes review
petition against that same patent, and the Board stated that “allowing a party
to file both a declaratory judgment of noninfringment and an inter partes
review does not constitute harassment of a patent owner.” Ariosa,
Paper 166, slip op. at 15.
We agree with Petitioner. Hulu’s Complaint only alleges a cause of
action for noninfringement, not invalidity, and therefore is not considered a
filing of a civil action for invalidity under 35 U.S.C. § 315(a)(1). Although
Ariosa is not precedential, we find it instructive and on point to the facts of
this case. See Ariosa, Paper 166, slip op. at 14. Accordingly, we are not
persuaded by Patent Owner that Hulu is barred from filing its Petition under
35 U.S.C. § 315(a)(1).
2. Section 315(b)
Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be
instituted if the petition requesting the proceedings is filed more than 1 year
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after the date on which the petitioner, real party in interest, or privy of the
petitioner is served with a complaint alleging infringement of the patent.”
Patent Owner argues that Petitioner filed its Petition more than one
year after Petitioner was served a complaint filed with the United States
International Trade Commission (“ITC”). PO Resp. 4‒6. Petitioner
responds that § 315(b) only applies to service of a complaint in a civil action
and not to administrative proceedings such as an ITC investigation.
Pet. Reply 5‒6 (citing Alcon Research, Ltd. v. Dr. Joseph Neev, Case
IPR2014-00217, Paper 21, 9 (PTAB May 9, 2014); Amkor Tech., Inc. v.
Tessera, Inc., Case IPR2013-00242, Paper 98, slip op. at 10–12 (PTAB Jan.
31, 2014)). Petitioner specifically argues that the Board has rejected similar
arguments as those raised by Patent Owner and held that § 315(b) only
covers civil actions brought in federal district court. Paper 17, 3‒5 (citing
Amkor, Paper 98, 7–8). Patent Owner argues that Amkor is directed to
administrative proceedings such as arbitration, and any discussion in Amkor
regarding an ITC investigation is not relevant. Prelim. Resp. 13, n. 1.
Patent Owner’s argument is not persuasive. We agree with Petitioner
that 35 U.S.C. § 315(b) applies only to civil actions for patent infringement,
and not to an administrative proceeding, including an ITC investigation. See
Amkor, Paper 98, slip op. at 6–18; Brinkman Corp. v. A&J Mfg., LLC, Case
IPR2015-00056, slip op. at 7–8 (PTAB Mar. 23, 2015) (Paper 10).
Although Amkor and Brinkman Corp. are not precedential, we find them
instructive and directly on point. In Amkor, the Board determined that “had
Congress intended for arbitration, ITC, or other non-judicial proceedings to
trigger the time bar of section 315(b), it would have used more
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encompassing language than ‘Patent Owner’s Action’ and ‘served with a
complaint,’ which are harmonious with a civil action.” Amkor, Paper 98,
slip op. at 11 (determining that the time bar is limited to being triggered by
the service of a complaint in a civil action). A similar decision by the Board
in Brinkman Corp. reaches the same result and specifically is directed
toward an ITC investigation. Accordingly, we are not persuaded by Patent
Owner that Petitioner is barred under 35 U.S.C. § 315(b).
B. Claims 1, 11, 12, 14, 16, 19, 22, 23, 27, 30, and 31 of the
ʼ704 Patent, Claims 3, 6, 9, 10, 14, 17, and 18 of the ʼ469 Patent,
and Claims 4 and 6‒14 of the ʼ121 Patent
1. Overview
Petitioner contends that claim 1 of the ’704 patent is unpatentable
under 35 U.S.C. § 103(a) as unpatentable over WINS and NetBIOS, and
claims 11, 12, 14, 16, 19, 22, 23, 27, 30, and 31 of the ʼ704 patent are
unpatentable under 35 U.S.C. § 103(a) as obvious over WINS, NetBIOS,
and Pinard. 209 Pet. 37–60. Petitioner contends that claims 3, 9, 14, 17, and
18 of the ʼ469 patent are unpatentable under 35 U.S.C. § 103(a) as obvious
over WINS, NetBIOS, and Pinard, and claim 6 as unpatentable under 35
U.S.C. § 103(a) as unpatentable over WINS and NetBIOS. 198 Pet. 37–60.
Petitioner contends that claims 4 and 6‒14 of the ʼ121 patent are
unpatentable under 35 U.S.C. § 103(a) as obvious over WINS and NetBIOS.
196 Pet. 29–60. We have reviewed the Petition and supporting evidence and
determine that Petitioner has not shown by a preponderance of the evidence
that the challenged claims are unpatentable.
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2. WINS (209 Ex. 1003; 198 Ex. 1003; 196 Ex. 1004)
WINS discloses how to install, configure, and troubleshoot
Microsoft TCP/IP on a computer running the Microsoft Windows NT
Workstation or Windows NT Server operating system. Ex. 1003, 3.12 When
a computer’s name is registered with the Windows Internet Name Service
server, the Windows Internet Name Service server accepts the entry with a
timestamp, an incremental unique version number, and other information.
Id. at 67–69. A name query request is received by the Windows Internet
Name Service server and allows a client to establish a session based on the
address mapping received from the Windows Internet Name Service server.
Id. at 67–68. For example, if a first computer wants to communicate with a
second computer, the first computer queries the Windows Internet Name
Service server for the address of the second computer. Id. at 62–63. When
the first computer receives the appropriate address from the Windows
Internet Name Service server, it connects directly to the second computer.
Id.
3. NetBIOS (209 Ex. 1004; 198 Ex. 1004; 196 Ex. 1004)
NetBIOS (“Network Basic Input/Output System”) is a software
interface that allows applications on different computers to communicate
within a computer network, such as a local area network or the Internet, and

12 Ex. 1003 includes page numbers indicated by the publication itself, and
different page numbers provided by Petitioner. Our references are to the
page numbers provided by Petitioner.
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was originally designed for IBM’s PC-Network. Ex. 1004, 378.13 NetBIOS
applications employ mechanisms to locate resources, establish connections,
send and receive data with an application peer, and terminate connections.
Id. A NetBIOS session is the exchange of messages between a pair of
NetBIOS applications. Id. at 380.
The NetBIOS name service is the collection of procedures through
which nodes of a network acquire, defend, and locate the holders of
NetBIOS names. Id. at 395. A node registers a name with the NetBIOS
Name Server, which stores the registered name in a database. Id. at 403–04,
413. A name query transaction can be initiated by an end-node in an attempt
to obtain the IP address associated with a NetBIOS name. Id. at 407–08. If
the NetBIOS Name Server has information regarding a queried node, the
NetBIOS Name Server transmits a positive response. Id. at 408–09. If the
NetBIOS Name Server does not have information regarding a queried node,
the NetBIOS Name Server transmits a negative response. Id. Once the
IP addresses have been found for a target name, a NetBIOS session service
begins. Id. at 416. The NetBIOS session service involves directed (point-to-
point) communications. Id.
4. Pinard (209 Ex. 1020; 198 Ex. 1020)
Pinard discloses a method of indicating the status of various calls to a
user. Ex. 1020, 1:6–8. A personal computer, containing a telephone
application software program, displays an icon representing a local user of a

13 Ex. 1014 includes page numbers indicated by the publication itself, and
different page numbers provided by Petitioner. Our references are to the
page numbers provided by Petitioner.
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telephone. Id. at 4:1–3, 4:10–13. The display further includes a “call setup”
icon that establishes a call when a user drags the icon of the user to the “call
setup” icon to establish an outgoing call. Id. at 4:16–22. The software then
displays a subscriber directory, allowing the user to drag the icon of a person
to be called to the call setup icon. Id. at 4:23–28, 4:38–42. The application
software program then causes the server to dial the number for the person to
be called and establishes a call, as designated by the call icon. Id. at 4:48–
51.
5. Analysis
As discussed in our claim construction analysis above, claims 1, 11,
12, 14, 16, 19, 22, 23, 27, 30, and 31 of the ʼ704 Patent, claims 3, 6, 9, 10,
14, 17, and 18 of the ʼ469 patent, and claims 4 and 6‒14 of the ʼ121 patent
recite the limitations “is connected to the computer network,” “on-line
status,” and “is accessible.” See Section I.E.1. As also discussed above, we
construe these limitations as “is connected to the computer network at the
time that the query is transmitted to the server.”
Petitioner argues that WINS discloses a dynamic database mapping
computer names to IP addresses, software running on a first process requests
the IP address of a second process by sending a name query request to the
WINS server, and the server responds by providing the first process with the
IP address of the second process if the name and IP address are registered in
the database. 209 Pet. 39‒43 (citing 209 Ex. 1003, xii, 46, 49, 53, 56, 57,
97). Petitioner further argues that the server keeps the mapping of names to
IP addresses relatively current by tracking which users are still connected to
the network. Id. (citing Ex. 1003, 56, 59). Petitioner further argues that
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NetBIOS discloses that the IP address of a second process is received from
the directory server. Id. (citing Ex. 1002 ¶ 94).
Patent Owner argues that these descriptions from WINS and NetBIOS
fail to determine whether a computer or process is connected to the
computer network. PO Resp. 48–51. In view of our construction of this
claim limitation, we agree with Patent Owner. WINS discloses that once a
computer is registered with the WINS server (which is a NetBIOS Name
Server (NBNS)) as active and on-line, the WINS server maintains a database
of names and addresses as active and on-line by (1) releasing names once a
computer is shut down properly, and (2) requiring a renewal time period in
which a computer must reregister. Ex. 1003, 62–63, 68–69. WINS
discloses that in response to User Datagram Protocol (UDP) name queries,
“a mapping in the database does not ensure that the related device is
currently running.” Id. at 68. WINS further explains that a “local WINS
database should periodically be cleared of released entries and old entries
that were registered at another WINS server but did not get removed from
this WINS database for some reason.” Id. at 150. In other words, WINS
discloses that the WINS database may include entries of computers that are
not currently connected to the WINS network. Accordingly, a query to as to
whether a second process “is connected to the computer network” in WINS
will not determine whether the second process is connected to the WINS
network at the time that the query is transmitted to the server.
As discussed above in our claim construction analysis above (see
Section I.E.1), a query as to whether a process “is connected to a computer
network” or has an “on-line” status asks “whether the device ‘is’ connected,
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not whether it was connected or whether it is still registered as being
connected even if that registration information is no longer accurate. It is
not a reasonable interpretation of the claim language . . . to say that it is
satisfied by a query that asks only for registration information, regardless of
its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that
the WINS server has information that a process “was” connected to the
computer network, and that information may no longer be accurate. See
Ex. 1003, 68, 150. As such, we determine that WINS does not disclose the
claimed “is connected to the computer network,” “on-line status,” or “is
accessible,” as construed herein.
Similarly, NetBIOS discloses a registration process for resources or
nodes to receive a unique name by registering a name. Ex. 1004, 379.
During a name query (discovery), a datagram is sent requesting the name
and address of another resource. Id. at 396. The NBNS maintains a
database of resource names through explicit name deletion, where the node
specifies a deletion function and implicit name deletion, which occurs when
a node ceases operation. Id. at 379. NetBIOS explains that implicit name
deletion “is a frequent occurrence.” Id. Implicit name deletion is managed
by assigning nodes a specified lifetime for registered names, where a name
is silently released if a node fails to refresh the registered name before the
lifetime expires. Id. NetBIOS further discloses a mechanism where the
NBNS may correct the information stored after an incorrect response is
provided to a requesting node. See id. at 409. However, similar to WINS,
NetBIOS discloses that the information stored by the NBNS may be
incorrect, and, therefore, will not determine whether a second process is
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connected to the computer network at the time that the query is transmitted
to the server. Therefore, NetBIOS also does not disclose the claimed “is
connected to the computer network,” “on-line status,” or “is accessible.”
Given that the combination of WINS and NetBIOS fails to teach or
suggest the claims as construed, we need not reach the remaining arguments
presented by Petitioner and Patent Owner.
6. Conclusion
Accordingly, we determine that Petitioner has not demonstrated by a
preponderance of the evidence that claims 1, 11, 12, 14, 16, 22, 23, 27, 30,
and 31 of the ʼ704 patent, claims 3, 6, 9, 10, 14, 17, and 18 of the
ʼ469 patent, and claims 6, 8, 10, 11, 13, and 14 of the ʼ121 patent are
unpatentable.
C. Claims 1, 2, and 5 of the ʼ469 Patent and Claim 3 of the
’121 Patent
1. Overview
Petitioner contends that claims 1 and 2 of the ʼ469 patent are
unpatentable under 35 U.S.C. § 103(a) as obvious over WINS, NetBIOS,
and Pinard, and claim 5 of the ’469 patent is unpatentable under 35 U.S.C.
§ 103(a) as obvious over WINS, NetBIOS, and Palmer. 198 Pet. 37–47, 54‒
55, 58‒59. For claims 1, 2, and 5, Petitioner provides citations for where
each claim limitation is disclosed by WINS and NetBIOS. Id. Petitioner
also articulates reasoning with rational underpinnings why a person of
ordinary skill in the art at the time of the invention would have combined the
teachings of WINS and NetBIOS. Id. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)). We determine the record supports Petitioner’s contentions and adopt
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Petitioner’s contentions discussed below as our own. Furthermore, we have
reviewed the Petition and supporting evidence and determine that Petitioner
has shown by a preponderance of the evidence that claims 1, 2, and 5 of the
’469 patent would have been obvious over WINS and NetBIOS. See id.
Petitioner also contends that claim 3 of the ʼ121 patent is unpatentable
under 35 U.S.C. § 103(a) as obvious over WINS and NetBIOS.
196 Pet. 29–38. Petitioner provides citations for where each claim limitation
is taught by WINS and NetBIOS. Id. Petitioner also articulates reasoning
with rational underpinnings why a person of ordinary skill in the art at the
time of the invention would have combined the teachings of WINS and
NetBIOS. Id. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d at
988). We determine the record supports Petitioner’s contentions and adopt
Petitioner’s contentions discussed below as our own. Furthermore, we have
reviewed the Petition and supporting evidence and determine that Petitioner
has shown by a preponderance of the evidence that claim 3 of the ’121
patent would have been obvious over WINS and NetBIOS. See id.
2. Analysis – Claims 1, 2, and 5 of the ’469 Patent and Claim 3 of
the ’121 Patent
Claims 1, 2, and 5 of the ʼ469 patent and claim 3 of the ’121 patent
are distinguished from the other challenged claims in these proceedings
because these three claims do not recite the limitations “is connected to the
computer network,” “on-line status,” or “is accessible.” Since this issue was
dispositive as to the other challenged claims in these proceedings, we review
claims 1, 2, and 5 of the ʼ469 patent and claim 3 of the ’121 patent
separately.
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Claim 1 recites a “computer program product for use with a computer
system having a display, the computer system capable of executing a first
process and connecting to other processes and a server process over a
computer network” and “the computer program product comprising a
computer usable medium having computer readable code means embodied
in the medium.” 198 Ex. 1001, 67 (1:28–34).14 Petitioner argues that WINS
discloses a computer program product comprising a computer useable
medium having computer code embodied in that medium for use with a
computer system. 198 Pet. 39–40 (citing 198 Ex. 1003, 121, 155).
Petitioner argues that WINS discloses a computer can execute a first process
on a first computer and communicate with a second process on a second
computer, a directory server, and a mail server process on a computer
network. Id. at 40 (citing 198 Ex. 1003, 29, 76, 118‒119). Petitioner
additionally contends that NetBIOS discloses a software interface to a set of
services. Id. (citing 198 Ex. 1004, 374, 377). Petitioner further argues that
Pinard discloses a telephone application software program for use with a
personal computer and a server, and provides a human machine interface
(HMI). Id. at 41 (citing 198 Ex. 1020, 2:9–13, 2:23–25, 2:33–38). As
discussed above in our claim construction, “process” includes a “processing
unit” that is running a program (operating system) or application (see
Section I.E.2), and WINS describes the Windows NT operating system,

14 A Reexamination proceeding amended some of the claims of the
’469 patent and the Ex Parte Reexamination Certificate is included at
page 67 of 198 Ex. 1001.
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NetBIOS includes applications, and Pinard further discloses a program or
application.
Claim 1 further recites “program code for generating a user-interface
enabling control of a first process executing on the computer system.”
198 Ex. 1001, 67 (1:35–37). Petitioner argues that WINS discloses
“software generating multiple user interfaces enabling control of the
Windows NT or Windows for Workgroups operation system.” 198 Pet. 41
(citing 198 Ex. 1003, 26, 38, 41, 43, 46, 48, 50, 87‒89, 92, 94, 96, 97, 104,
105, 124, 125, 127, 129, 133, 135, 137, 138, 140, 141, 146, 150, 152, 174,
176, 178, 188, 203‒205, 236).
Claim 1 also recites “program code for determining the currently
assigned network protocol address of the first process upon connection to the
computer network.” 198 Ex. 1001, 67 (1:38–40). Claim 1 additionally
recites:
program code responsive to the currently assigned network
protocol address of the first process, for establishing a
communication connection with the server process and for
forwarding the assigned network protocol address of the first
process and a unique identifier of the first process to the server
process upon establishing a communication connection with the
server process.
198 Ex. 1001, 67 (1:41–47).
Petitioner argues that WINS discloses that the DHCP server
dynamically assigns IP addresses to processes upon connection to the
network, and these dynamically assigned addresses are forwarded to the
WINS/NetBIOS server. 198 Pet. 42–43 (citing Ex. 1003, 40, 65, 66, 67, 72,
74). Petitioner further argues that WINS discloses a dynamic database
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mapping computer names to IP addresses, software running on a first
process requests the IP address of a second process by sending a name query
request to the WINS server, and the server responds by providing the first
process with the IP address of the second process if the name and IP address
are registered in the database. Id. at 48 (citing Ex. 1003, 41, 65, 67, 69, 72,
73–74, 75). Petitioner contends that the server keeps the mapping of names
to IP addresses relatively current by tracking which users are still connected
to the network. Id. (citing 198 Ex. 1003, 69, 75). Petitioner further argues
that NetBIOS discloses that every node has a permanent unique name. Id.
(citing 198 Ex. 1004, 383, 394, 416).
Claim 1 further recites “program code, responsive to user input
commands, for establishing a point-to-point communications with another
process over the computer network.” 198 Ex. 1001, 67 (1:48–50).
Petitioner argues WINS discloses that in a p-node environment, a first
process queries the WINS server for the address of a second process and
establishes a point-to-point session with the second process. 198 Pet. 45‒46
(citing 198 Ex. 1003, 67, 266). Petitioner further argues that NetBIOS
discloses p-nodes are point-to-point nodes that establish a point-to-point
connection with a remote party or second process. Id. at 46 (citing
198 Ex. 1004, 383, 415–416). Petitioner additionally argues that Pinard
discloses a human machine interface used to establish calls between two
network devices. Id. (citing 198 Ex. 1020, 2:9–11, 2:59–3:9). We are
persuaded by Petitioner’s contentions with respect to claim 1, and we adopt
them as our own.
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Petitioner further contends that WINS discloses that NetBIOS is
incorporated into the WINS system and expressly discloses that WINS
should be combined with NetBIOS. Id. at 37–38 (citing 198 Ex. 1002 ¶ 81;
Ex. 1003, 65). Accordingly, Petitioner concludes that one of ordinary skill
in the art would have known about and been motivated to combine the
references. Id. Petitioner further contends that a person with ordinary skill
in the art would have been motivated similarly to combine WINS and
NetBIOS with Pinard because Pinard discloses a telephony application with
a graphical user interface that allows a user to establish and manage
telephone calls. Id. at 38–39. Petitioner specifically argues that Pinard
references Windows 3.1 and WINS references Windows 3.11 and
Windows NT, and, therefore, a person with ordinary skill in the art would
have known how to adapt the graphical user interfaces in Pinard to the
system in WINS. Id. We are persuaded that Microsoft TCP/IP for Windows
NT utilizes NetBIOS features for name resolution, as disclosed by WINS,
and Pinard’s program is compatible with a Windows operating system, and,
therefore, a person with ordinary skill in the art would have readily
combined the disclosures of WINS, NetBIOS, and Pinard.
Claim 2 of the ’469 patent recites
[t]he computer program product of claim 1 wherein the
program code for establishing a point-to-point communication
link further comprises:
d.l program code, responsive to the network protocol
address of a second process, for establishing a point-to-point
communication link between the first process and the second
process over the computer network
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198 Ex. 1001, 41:48–54. Petitioner argues WINS discloses that in a p-node
environment, a first process queries the WINS server for the address of a
second process and establishes a point-to-point session with the second
process. 198 Pet. 45–46 (citing 198 Ex. 1003, 67, 249). Petitioner further
argues that NetBIOS discloses p-nodes are point-to-point nodes that
establish a point-to-point connection with a remote party or second process.
Id. at 46 (citing 198 Ex. 1004, Ex. 1004, 383, 415–416). Petitioner
additionally argues that Pinard discloses a human machine interface used to
establish calls between two network devices. Id. (citing 198 Ex. 1020, 2:9–
11, 2:59–3:9). We are persuaded by Petitioner’s contentions with respect to
claim 2, and we adopt them as our own.
Independent claim 5 of the ’469 patent recites limitations similar to
those recited in independent claim 1 of the ’469 patent, and, therefore,
Petitioner presents the same contentions for independent claim 5 as
presented for independent claim 1 of the ’469 patent. We are persuaded by
Petitioner’s contentions with respect to claim 5 of the ’469 patent, and we
adopt them as our own.
Independent claim 3 of the ’121 patent recites limitations similar to
those recited in independent claim 1 of the ’469 patent, and, therefore
Petitioner presents similar contentions for independent claim 3 of the
’121 patent. We are persuaded by Petitioner’s contentions with respect to
claim 3 of the ’121 patent, and we adopt them as our own.
Patent Owner argues that (a) WINS and NetBIOS fail to disclose the
“process” elements with respect to both the ’469 patent and ’121 patent, and
(b) WINS and NetBIOS fail to disclose “a unique identifier of the first
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process” with respect to the ’469 patent.15 198 PO Resp. 25–35, 56–57;
196 PO Resp. 27‒38.
a. “process” elements
Claim 1 of the ’469 patent recites that the assigned network protocol
address and the unique identifier of the “first process” is forwarded to the
server. Claims 2 and 5 of the ’469 patent, and claim 3 of the ’121 patent
recite the same “process” element. Patent Owner contends that the claimed
“process” does not include a computer. Id. at 25–35. However, as discussed
above in our claim construction, “process” includes a “processing unit” that
is running a program (operating system) or application, and we further note
that the ʼ469 patent specification and ’121 patent specification
interchangeably uses the terms “process” and “processing unit.”
See Section I.E.2. We reject Patent Owner’s claim construction for the term
“process” for the reasons discussed above. Id. WINS describes the
Windows NT operating system and NetBIOS includes applications. See 198
Ex. 1003, 3, 62–63; Ex. 1004, 378, 384). Furthermore, both WINS and

15 Patent Owner also argues that claims 1‒3, 9, 10, 14, 17, and 18 recite an
“interface element representing a first callee process,” and an “interface
element representing a second callee process,” and “Petitioner fails to
identify any evidence supporting its conclusory assertion that it would be
obvious to combine WINS and NetBIOS with Pinard” based on these
“interface elements.” 198 PO Resp. 50‒56. However, claims 1 and 2 do not
recite these limitations. Accordingly, we are not persuaded by Patent
Owner’s arguments with respect to claims 1 and 2. Furthermore, we are
persuaded by Petitioner’s rationale for combining WINS, NetBIOS, and
Pinard for the reasons discussed above, and adopt Petitioner’s rationale as
our own. See Section II.B.2.

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NetBIOS disclose processing units or computers that are running an instance
of the Windows NT operating system and NetBIOS. Id. Accordingly, we
disagree with Patent Owner’s argument.
b. “unique identifier”
Claim 1 recites “forwarding the assigned network protocol address . . .
and a unique identifier” of the first process to the server. Patent Owner
contends that WINS and NetBIOS fail to disclose a “unique identifier” as
recited by claim 1 of the ʼ469 patent. 198 PO Resp. 56–57. Patent Owner
argues that the term “unique” means “being the only one” and identifier
means “one that identifies” and, therefore, a “unique identifier” of the first
process means “something that identifies only the first process.” Id. (citing
198 Ex. 2013, 3). Patent Owner contends that WINS and NetBIOS disclose
a registration system that registers the names and IP address for computers,
not the applications running thereon, and, therefore, the “registered name of
that computer would not be unique to any process on that computer.” Id. As
discussed above, we reject Patent Owner’s construction of the term
“process” to exclude a running instance of an operating system and a
computer. See Sections I.E.2, II.B2.b.
Patent Owner further argues that WINS and NetBIOS disclose the
registration of computer names, and “more than one computer can have the
same name.” 198 PO Resp. 57 (citing 198 Ex. 1004, 418). We disagree
with Patent Owner. NetBIOS discloses that a “unique name should be held
by only one station at a time.” 198 Ex. 1004, 379. WINS discloses that
“[n]ame registration ensures that the computer’s name and IP address are
unique for each device.” 198 Ex. 1003, 68.
IPR2015-00196 (Patent 6,131,121 C1)
IPR2015-00198 (Patent 6,009,469 C1)
IPR2015-00209 (Patent 6,108,704 C1)

34

Accordingly, we disagree with Patent Owner that WINS and NetBIOS
fail to disclose a “unique identifier” as required by independent claim 1.
7. Conclusion
We have reviewed the Petition and supporting evidence and determine
that Petitioner has shown by a preponderance of the evidence that claims 1,
2, and 5 of the ʼ469 patent are obvious over WINS and NetBIOS, and claim
3 of the ’121 patent is obvious over WINS, NetBIOS, and Pinard.
Accordingly, we determine that Petitioner has demonstrated by a
preponderance of the evidence that claims 1, 2, and 5 of the ʼ469 patent and
claim 3 of the ’121 patent are unpatentable.
III. MOTION TO EXCLUDE
Petitioner filed a Motion to Exclude, seeking to exclude
Exhibits 2021, 2028, 2031, 2033, 2034, 2035, 2036, and 2039. Mot. 1.
Petitioner specifically argues that Exhibits 2021, 2028, 2031, 2033, 2034,
2035, and 2036 should be excluded because these Exhibits are irrelevant
under Federal Rule of Evidence 401. Id. at 1‒5. Petitioner also argues that
Exhibits 2028 and 2033 have not been authenticated under Federal Rules of
Evidence 901(b)(1). Id. at 1‒3. Petitioner additionally argues that
Exhibits 2028, 2033, and 2039 should be excluded as hearsay under Federal
Rules of Evidence 802. Id.
Because our decision does not rely on any of the challenged Exhibits,
we dismiss Petitioner’s Motion to Exclude as moot.
IV. CONCLUSION
We are not persuaded that Petitioner has demonstrated by a
preponderance of the evidence that claims 1, 11, 12, 14, 16, 19, 22, 23, 27,
IPR2015-00196 (Patent 6,131,121 C1)
IPR2015-00198 (Patent 6,009,469 C1)
IPR2015-00209 (Patent 6,108,704 C1)

35

30, and 31 of the ʼ704 patent, claims 3, 6, 9, 10, 14, 17, and 18 of the
ʼ469 patent, and claims 4 and 6‒14 of the ʼ121 patent are unpatentable.
We are persuaded that Petitioner has demonstrated by a
preponderance of the evidence that claims 1, 2, and 5 of the ʼ469 patent and
claim 3 of the ’121 patent are unpatentable.
Petitioner’s Motion to Exclude is dismissed as moot.
V. ORDER
Accordingly, it is hereby:
ORDERED that, based on the grounds under review, claims 1, 11, 12,
14, 16, 19, 22, 23, 27, 30, and 31 of U.S. Patent No. 6,108,704 C1, claims 3,
6, 9, 10, 14, 17, and 18 of U.S. Patent No. 6,009,469 C1, and claims 4 and
6‒14 of U.S. Patent No. 6,131,121 C1 have not been shown by a
preponderance of the evidence to be unpatentable;
FURTHER ORDERED that, based on the grounds under review,
claims 1, 2, and 5 of U.S. Patent No. 6,009,469 C1 and claim 3 of U.S.
Patent No. 6,131,121 C1 have been shown by a preponderance of the
evidence to be unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Dismiss is
dismissed as moot; and
FURTHER ORDERED that this is a Final Written Decision of the
Board under 35 U.S.C. § 318(a), and parties to the proceeding seeking
judicial review of this decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.

IPR2015-00196 (Patent 6,131,121 C1)
IPR2015-00198 (Patent 6,009,469 C1)
IPR2015-00209 (Patent 6,108,704 C1)

36

For PETITIONER:
David L. Cavanaugh
david.cavanaugh@wilmerhale.com
Jason D. Kipnis
Jason.Kipnis@wilmerhale.com
Dorothy P. Whelan
whelan@fr.com
Christopher O. Green
cgreen@fr.com

For PATENT OWNER:
William A. Meunier
WAMeunier@mintz.com
Michael T. Renaud
mtrenaud@mintz.com